1-800-Contacts has filed a lawsuit in federal court against LensWorld for buying search links that were triggered by the keyword “1-800-contacts.” 1-800-contacts has filed several other similar cases, and says that they are doing so in order to prevent confusion.
1-800-Contacts, whose headquarters are in Draper, Utah, is amongst several other Utah lawsuits filed recently relating to the use of trademarked terms in online advertising. Last year, Utah passed a law that made it illegal to use other companies’ trademarked terms to trigger ads, but the law has not yet gone into effect.
This latest lawsuit dealing with trademarks in online advertising, brings to mind another case from a few years ago, in which the auto insurance company Geico took search giant Google to court. In this case, a federal judge ruled that Geico hadn’t proven that consumers were confused when shown links to Geico rivals after having typed “Geico” into the search box.
In another instance, Google was also brought to court by Rescuecom, a computer repair company. This case was dismissed before trial when a federal court ruled that a rival company’s use of Rescuecom to trigger ads doesn’t violate trademark law.
So while it is apparent that thus far the law is on the side of the companies selling the ads, with 1-800-contacts again bringing the issue to court, previous rulings with either be confirmed once again, or the search marketing industry could be in for a major shake-up.
If the judge in the case of 1-800-contacts decides that allowing rivals to purchase trademarked keywords to pull up advertising for their own company is in fact an issue of trademark infringement, it could bring the entire search marketing industry to a screeching halt, affecting not only the purchasers of ads, but those companies selling the ads, such as Google and Yahoo. Eric Goldman, director of the High Tech Law Institute at Santa Clara University School of Law, says “That would have a noticeable effect on the online advertising industry.”
I agree that the likelihood is that eventually this practice become regulated. One day soon, there will be a successful lawsuit protecting a trademarked key word because the alternative is to allow unscrupulous advertisers and businesses to ride the coat-tails of someone else’s success by attempting to capture their traffic.
I agree.
I think it’s an interesting situation that only the courts can determine the outcome of. I’m not convinced that it should be illegal – specifically the triggering of an ad by a trademark term. What’s written in the resulting ads is a different story all together
This is a double sided blade. There is positive and negative effects on both the publisher and advertiser.
I am going to trademark the name New York Search marketing… gotta run.
The problem i see is the “trigger” you can not define it, A broad setting on the word :contacts” will trigger a search term for 1 800 contacts. Because google wants as many ads to display as possible to make the the most money. The real 1800 contacts will display and 9 other relevant to any of the words in the search term like “contacts” If 1800 contacts pushes this it will bite them hard because they come up for relevant searches on broad matched keywords like “lens world” .